Appeal No. 2005-0731 Page 21
Application No. 09/974,712
attention of the public. But a patent is not a hunting license. It is not a reward for the
search, but compensation for its successful conclusion.” Id.
The polynucleotides of the instant claims may indeed prove to be useful (and
valuable), after the in vivo role of the encoded protein is discovered. The work required
to confer value on the claimed products, however, remains to be done. The instant
specification’s disclosure does not justify a grant of patent rights. See Brenner, 383
U.S. at 534, 148 USPQ at 695: “[A] process patent in the chemical field, which has not
been developed and pointed to the degree of specific utility, creates a monopoly of
knowledge which should be granted only if clearly commanded by the statute. Until the
process claim has been reduced to production of a product shown to be useful, the
metes and bounds of that monopoly are not capable of precise delineation. It may
engross a vast, unknown, and perhaps unknowable area. Such a patent may confer
power to block off whole areas of scientific development.” We consider the Brenner
Court’s concern about the “power to block off whole areas of scientific development” to
be equally applicable here.
Finally, adopting the per se rule that Appellants seek—that any expressed
human gene has utility because it can be used in a DNA chip—would mean that almost
any naturally occurring nucleic acid would be patentable. Appellants’ reasoning does
not depend on the biological function of the protein encoded by the claimed nucleic
acids, and so would apparently apply to any expressed human gene, as well as
fragments of them (see, e.g., the specification at page 6, line 25, to page 7, line 2).
Nor can the rationale be confined to expressed human genes. We can take
judicial notice of the fact that other organisms are of interest for many different reasons,
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